`571-272-7822
`
`Paper 10
`Date: June 28, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SELECT SIRES INC., SEMEX ALLIANCE, INC., URUS GROUP LP,
`AND INGURAN, LLC D/B/A STGENETICS,
`~ Petitioner,
`
`Vv.
`
`ABS GLOBAL,INC.,
`Patent Owner.
`
`PGR2022-00019 (Patent 10,975,351 B2)
`PGR2022-00020 (Patent 10,982,187 B2)!
`
`Before ULRIKE W. JENKS, SUSAN L. C. MITCHELL,and
`ROBERT A. POLLOCK,Administrative Patent Judges.
`
`JENKS, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Post-Grant Review
`Due to Disclaimer of All Challenged Claims
`35 U.S.C. § 324; 37 CFR. § 42.207(e)
`
`' This Decision addresses issues that are the same in both captioned
`proceedings. Weexercise our discretion to issue one Decisionto befiled in
`each proceeding. The parties are not authorized to use this style of heading
`in subsequent papers.
`
`
`
`PGR2022-00019 (Patent 10,975,351 B2)
`PGR2022-00020 (Patent 10,982,187 B2)
`On June 1, 2022, Patent Owner ABS Global Ine. (“Patent Owner’)
`notified the Board, via an email, that it filed a Notice of Disclaimer with the
`U.S. Patent and Trademark Office, disclaiming all claims of US 10,975,351 -
`B2 (“the 351 patent”) and US 10,982,187 B2 (“the ’187 patent”). See
`Exs. 3001-30037. Patent Owner indicatedthat Petitioner? wasnotified of the
`
`|
`
`filing of the disclaimers. See Ex. 3001 (“Counsel for Petitioner is copied on
`
`this email.’’). In its email, Patent Ownerstated that, in view ofits statutory
`disclaimerofall of the claimsof the ’351 patent and the ’187 patent, Patent
`Owner understood that the Board would terminate the post grant review
`proceedings associated with each patent. Ex. 3001.
`. Patent Ownerhas disclaimedall claimsof the 7351 patent and the
`
`°187 patent and paid the requisite fees. See Ex. 3002 and Ex. 3003; see also
`
`37 C.F.R. § 1.321 (setting forth requirements for statutory disclaimer).
`
`Accordingly, we denyinstitution of the requested post-grant review. See
`37 C.F.R. § 42.207(€)
`(“No post-grant review will be instituted based on
`disclaimed claims.”); see also GeneralElec. Co. v. United Techs. Corp.,
`IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying
`
`Exhibit numbersrefer to proceeding PGR2022-00019. Corresponding
`Exhibits were entered in PGR2022-00020.
`.
`3 We acknowledgePetitioner’s request to treat the terminal disclaimer as a
`request for adverse judgment (see Ex. 3004). However, because there are no
`pending claims for us to consider, we decline Petitioner’s request for further
`briefing. See General Elec. Co. v. United Techs. Corp., IPR2019-01489,
`Paper 11 at 4-5 (Dec. 10, 2019) (denyinginstitution based on disclaimer and
`declining authorization to file motion for adverse judgment); Google LLC v.
`Jenam Tech LLC, PGR2021-00082, Paper 8 at 2 n.1 (Nov. 17, 2021)
`(denying institution based upon disclaimer and declining petitioner’s request
`to file additional briefing regarding adverse judgment).
`
`2
`
`
`
`PGR2022-00019 (Patent 10,975,351 B2)
`PGR2022-00020 (Patent 10,982,187 B2)
`
`institution of inter partes review under analogous rule 37 C.F.R. § 42.107(e)
`based on disclaimer) (“General Electric”).
`In the present instance, and consistent with Rule 42.207(e) and the
`Board’s precedential General Electric decision, we determine that a denial
`of institution is sufficient to dispose of this case. See also Kymera
`|
`Therapeutics,Inc. y. Dana-Farber Cancer Institute, Inc., PGR2021-00115,
`
`Paper 13 at 3 (March 2, 2022) (denying institution based upon disclaimer of
`
`all claims of the challenged patent); Celltrion Inc. v. Regeneron
`
`Pharmaceuticals Inc., PGR2021-00117, Paper 16 at 3 (March 15, 2022)
`(denying institution based on disclaimerofall claims). Because the Board
`cannotinstitute trial on disclaimed claimsandall the challenged claims have
`
`been disclaimedhere, no post-grant review will be instituted.
`
`It is therefore
`
`ORDER
`
`ORDEREDthatthe Petition is deniedand no post-grant review is
`instituted.
`
`
`
`PGR2022-00019 (Patent 10,975,351 B2)
`PGR2022-00020 (Patent 10,982,187 B2)
`
`For PETITONER:
`
`Warren Thomas
`Anthony Zucchero
`MEUNIER CARLIN & CURFMAN LLC
`wthomas@mcciplaw.com
`azuchero@mcciplaw.com
`
`For PATENT OWNER:
`Michael Houston
`Joseph Meara
`Rebecca Hays
`FOLEY & LARDNER LLP
`mhouston@foley.com
`jmeara@foley.com
`rhays@foley.com
`
`
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